Trials@uspto.gov
`571-272-7822
`
`Paper: 8
`Date: June 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CONSTELLATION DESIGNS, LLC,
`Patent Owner.
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B21
`
`Before MIRIAM L. QUINN and MICHAEL T. CYGAN,
`Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Reply to Patent Owner’s Preliminary
`Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`1 The parties are not authorized to use this caption format.
`
`
`
`
`571-272-7822
`
`Paper: 8
`Date: June 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CONSTELLATION DESIGNS, LLC,
`Patent Owner.
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B21
`
`Before MIRIAM L. QUINN and MICHAEL T. CYGAN,
`Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Reply to Patent Owner’s Preliminary
`Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`1 The parties are not authorized to use this caption format.
`
`
`
`
`
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B2
`
`
`On May 30, 2023, Petitioner requested, via email, authorization to file
`in each case a Reply to Patent Owner’s Preliminary Response, filed on April
`17, 2013. Ex. 3001. Patent Owner supplied objections to this request. Id.
`On June 1, 2023, we held a conference call to permit Petitioner to argue in
`favor of such authorization, and for Patent Owner to set forth its objections.
`After hearing both parties, we determined that good cause for further
`briefing had not been shown, and informed the parties of that determination.
`This Order memorializes that determination, and further sets forth the
`reasons for denial of Petitioner’s request.
`We begin with Petitioner’s arguments for IPR2023-00228 and
`IPR2023-00229. Petitioner argues that good cause for additional briefing in
`IPR2023-00228 exists because Petitioner “could not have reasonably
`anticipated that Patent Owner would rely on testimony of Dr. Guillen i
`Fabregas that is inconsistent with the DeGaudenzi reference.” Ex. 3001.
`Similarly, Petitioner argues that good cause for additional briefing in
`IPR2023-00229 exists because Petitioner “could not have reasonably
`anticipated that Patent Owner would rely on testimony of Dr. Bauch that is
`inconsistent with Dr. Bauch’s other paper (Ex2017) introduced by Patent
`Owner.” Id. Petitioner argues that such additional briefing would assist the
`Board in evaluating the “merits of the arguments and evidence presented by
`both sides.” During the conference, Petitioner clarified that no further
`exhibits were sought to be entered through the additional briefing. Further,
`Petitioner clarified that its proposed briefing would address arguments that
`the Bauch testimony was inconsistent with the entirety of the record, and is
`not limited to comparison of that testimony with Exhibit 2017.
`
`2
`
`
`
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B2
`
`
`Patent Owner argued that for a showing of good cause, it is not
`sufficient that Petitioner could not have anticipated the particular testimony
`or declarant used to support a Preliminary Response, because that would
`always be true in every case in which a Preliminary Response is supported
`by evidence. Patent Owner further argued that, because the Board has the
`underlying exhibits, the Board “can easily discern” the veracity of the
`testimony. Ex. 3001. Patent Owner argues that mere allegations of
`“mischaracterization” have been found insufficient to show sufficient cause
`for additional briefing. Id. (citing Dell Inc. v. Neo Wireless LLC, IPR2021-
`01468, Paper 10, 3 ( Jan. 27, 2022) (“The Board routinely determines
`whether a party mischaracterizes the asserted references or the other party’s
`arguments without the need for additional briefing.”)).
` Based upon the arguments presented by the parties, we determine that
`Petitioner has not shown good cause for additional briefing for IPR2023-
`00228 and IPR2023-00229. Petitioner’s arguments focus on a perceived
`discrepancy between the testimony of Drs. Bauch and Fabregas and
`Petitioner’s characterization of the record. The decision whether to institute
`trial will determine whether such testimony is supported by the record, and
`whether Petitioner’s characterization is supported by the record. We note
`that the disputed documents are not unreasonably long so as to require
`further guideposts. See IPR2023-00228, Ex. 2002 (Fabregas Declaration, 16
`pages); IPR2023-00229, Exs. 2002 (Bauch Declaration, 21 pages), 2017 (6
`pages). To the extent that any discrepancy exists, such will be apparent from
`the record. We further note that because Petitioner’s request for additional
`briefing was filed over a month after the Preliminary Response, limited time
`
`3
`
`
`
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B2
`
`for additional briefing remains before the decision on institution is due.
`Although Petitioner argues that its briefing would assist the Board in its
`evaluation of the testimony, such assistance does not provide good cause for
`additional substantive briefing at this time.
`With respect to IPR2023-00319 and IPR2023-00320, Petitioner
`argues that good cause for additional briefing exists “because it was not
`possible for Petitioner to foresee how Patent Owner would mischaracterize
`the 777 Patent disclosure (particularly 12:11-37) and to address Patent
`Owner’s conflation of the obviousness and written description
`requirements.” Ex. 3001. During the conference, Petitioner pointed to
`certain annotations to Figures that had been made in the Preliminary
`Response. Petitioner admitted that such annotations were clearly marked
`and that Petitioner was not alleging that the Board would be confused as to
`which portions of the Figures were added by Patent Owner.
`Patent Owner argued that Petitioner has “ample opportunity to
`provide its characterization of the challenged patents’ disclosure,” and
`pointed to “22 pages of each Petition” in which Petitioner characterized the
`challenged patents. Patent Owner argued that in light of the treatment in the
`Petition and the presence of the underlying exhibits in the record, no further
`briefing is required.
`Based upon the arguments presented by the parties, we determine that
`Petitioner has not shown good cause for additional briefing for IPR2023-
`00319 and IPR2023-00320. Petitioner seeks only to correct alleged
`“mischaracterizations” of the disclosure of the challenged patents, and
`alleged conflation of written description and obviousness requirements.
`
`4
`
`
`
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B2
`
`However, Petitioner’s had the opportunity to present its arguments that the
`challenged claims were not entitled to an earlier priority date, including by
`characterizing the disclosure of the earlier documents in the priority chain,
`and took advantage of that opportunity through its lengthy analysis. See
`IPR2023-00320, Paper 3, 2–20. To the extent that Petitioner argues that
`Patent Owner mischaracterizes the disclosure of the ‘777 patent, which is an
`earlier document in the chain of priority of the ‘509 patent, both documents
`have been made of record such that the Board may evaluate their
`disclosures. To the extent that Petitioner argues that Patent Owner has
`conflated obviousness and written description requirements, the Board
`performs evaluation of arguments according to the applicable laws as a
`matter of its determination whether to institute trial. Although Petitioner
`argues that its briefing would assist the Board in its evaluation of the Patent
`Owner’s arguments, such assistance does not provide good cause for
`additional substantive briefing at this time.
`For the foregoing reasons, we determine that Petitioner has not shown
`good cause to authorize further briefing on the requested matters.
`Consequently, it is
`ORDERED that Petitioner’s request for authorization is denied.
`
`5
`
`
`
`IPR2023-00228, Patent 10,693,700 B2
`IPR2023-00229, Patent 11,019,509 B2
`IPR2023-00319, Patent 10,693,700 B2
`IPR2023-00320, Patent 11,019,509 B2
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Usman Khan
`Jennifer J. Huang
`Fish & Richardson P.C.
`IPR19688-0196IP1@fr.com
`PTABInbound@fr.com
`Axf-ptab@fr.com
`khan@fr.com
`khan@fr.com
`jjm@fr.com
`
`PATENT OWNER:
`
`William A. Meunier
`Michael T. Renaud
`Kevin C. Amendt
`Glovsky and Popeo, P.C.
`WAMeunier@mintz.com
`MTRenaud@mintz.com
`KCAmendt@mintz.com
`
`
`
`
`6
`
`
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